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Topic 5 : Retrieval and Comparison of Prior Art Citations

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Topic 5 : Retrieval and Comparison of Prior Art Citations Topic 5: Retrieval and Comparison of Prior Art Citations Lutz Mailänder Head, International Cooperation on Examination and Training Section Cairo April 29, 2019 Agenda Retrieval options for work products Types of prior art citations Search reports, list of citations Retrieval options Comparing search reports: CCD Types of citations/references Prior art relevant for patentability of claimed subject matter may be Cited by an applicant Cited by an examiner or other official search/examination bodies Cited by third parties (for example, Sect. 801 of PCT AI) Citations may originate from Substantive examination before grant Opposition, re-examination, revocation, … after grant Patents can cite other patents as prior art (backward citations) can be cited by other patents (forward citations) Samples of prior art citations Overview: Access to prior art citations Citations/references are usually presented as Bare listings of citations, for example lists of publication numbers only Citations in search reports supplemented with further useful information Search reports are available as: Regular patent publications (EP-A1/A3/A4, WO-A1/A3) Electronic documents accessible through file/dossier access platforms, such as online registers, Global Dossier, WIPO CASE Bare lists of citations are usually available On front pages of publications of granted patents, republications after opposition (EP-B1/B2..) Through separate links or integrated tables in patent databases, such as national registers (e.g. DE or EP Register) when viewing individual applications Trilateral Common Citation Document (CCD) International Search Report (ISR) Established by (selected) competent ISA Search based on claims as originally filed (Article 15) > Limited utility of ISR for amended claims in national phase Search performed according to PCT Examination Guidelines Prior art is everything made available to the public (Rule 33) in written disclosure (ISR may refer to oral disclosure, exhibition, though) prior to the international filing date (i.e. priorities are not taken into account for the international search) Not any written disclosure is to be searched: only PCT minimum documentation (Rule 34) In case of lack of unity, only the "first" invention will be searched (Rule 40), unless additional fees are paid ISA can decline search of certain subject matter (Rule 39), namely subject matter that is excluded from patentability in national law (PCT does not define what is patentable!) ISR ISR is "enriched" search report as it includes List of relevant prior art documents (citations) plus indications: Claims for which a citation is relevant Parts of the cited document which are relevant (e.g. 'line 5-6, page 7; drawing 6') for those claims Why the document is relevant (challenging novelty, inventive step; describing background art) IPCs of the claimed subject matter Limited search strategy: technology areas (IPC) searched Includes observations regarding lack of unity (Box III), or whether no meaningful search could be performed (clarity of claims) Enriched prior art search reports Application number International Patent Classification Category X, Y, A, etc. Relevant to Claim ... Cited documents Technical Fields Searched Searching Authority Date of Completion of the Search Examiner Categories of citations X particularly relevant if taken alone (novelty) Y particularly relevant if combined with another document of the same category (inventive step) A technological background O non written disclosure P intermediate document, i.e. published between the earliest priority date and the filing date E earlier document but published on or after the filing date T theory or principle underlying the invention D document cited in the application I (applied by EPO for limited period of time) See 16.59ff of the PCT Examination Guidelines Prior art categories Publication dates of prior art documents X / Y / X, Y P, X / P, Y E, X Priority date Filing date A / D / T Publications of search reports ISRs are published as WO-A1 or WO-A3 documents In addition to the PCT, only the EPO publishes search reports EP-A1 or A3 similar to WO-A1 or A3 EP-A4 for supplementary European search reports if examiners conduct additional searches No other IPO publishes search reports, they are only made publicly available through national registers ('laid open for public inspection') Accessible as well through Global Dossier and WIPO CASE Citation information is also made available through other interfaces of various databases (not in Patentscope, though) US-PAIR: search report US examiner US search reports are not enriched, i.e. no X,Y, A; no references to claims, no references to pages, lines, drawings,.. US-PAIR: prior art in image file wrapper "Image File Wrapper" contains search and examination reports US-PAIR: prior art tab List of references cited by List of references cited by applicant examiner US2011125613 US Final and Non-Final Rejections Relevance of citations (X, Y) can (currently) only be derived from the reasons of rejections stated in US examination reports and decisions ('final' and 'non-final rejections') 'Claims 1, 8-10,… not novel in view of US2004023117A1' US10613808 US search reports in Global Dossier WO2011113363 Espacenet: Backward Citations Citations in Inpadoc family list EP2570899 Citations (enriched) in EP-Register - 1 EP2570899 Citations (enriched) in EP-Register – 2 At the bottom of the page; may require scrolling down EP1991709 NON-PL Citations in EP-Register DOI – Digital Object Identifier Linking to publisher EP2225328 Citation during opposition (EP Register) Citations on front pages of grant publications Patent literature Non patent literature WO2017042731 WO2017033625 Third party observations Overview: http://www.wipo.int/scp/en/revocation_mechanisms/third_party/index.html For PCT, possible according to Section 801ff of Administrative Instructions Searchable in Patentscope: TPO:(* to *) Retrievable through tab "Documents" Third party observations Reference Explanation WO2011113363 Google patents: Forward Citations Backward and forward citations Patents can cite other patents as prior art (backward citations) can be cited by other patents (forward citations) Backward and forward citations For any publication A: Time dimension Publications cited in A Backward citations of A 1 2 3 A Publications citing A Forward citations of A A 1 2 3 root Atazanavir – citation map WO2011113363 Espacenet: Forward Citations Common Citation Document (CCD) http://ccd.fiveipoffices.org/CCD-2.1.6/ Common Citation Document (CCD) CCD originated from a request of the US commercial sector to have a one- stop-shop for citations of prior art identified by different IPOs for members of the patent family To avoid researching individual national phases Facilitate comparing prior art searches Facilitate identification of prior art seen only by one examiner, or prior art not included in the ISR Provide public access to trilateral offices' internal resources Trilateral and other offices had established mechanisms for non public exchange of prior art search reports CCD has been developed and is hosted by the EPO Access via link in Inpadoc family list of Espacenet or at http://ccd.fiveipoffices.org/CCD-2.1.6/ Common Citation Document (CCD) CCD offers consolidated access to family information and citation data from EPO, KIPO, JPO, SIPO, USPTO, PCT and several other jurisdictions for each respective family member where available. CCD builds on the EPO's family system: Family information is equivalent to that presented in Espacenet CCD presents family data in a different way: members of the extended family are ordered/sorted into simple families CCD permits comparing of search reports; namely, if a selected citation was seen by only one, several or all examiners (appears in one, several or all available search reports) CCD permits viewing of cited patent documents per family member in PDF and html No examination reports included yet CCD: Access via Inpadoc family list Click loads simple family in new window Sources of family information: CCD Simple family (“equivalents”) Family members are identified through application numbers Estimated number of simple families in extended family Retrieve extended family Enriched Citations of EPO Domestic family of selected citation PDF of selected citation Citations of JPO CCD – citations only view Shows for each citation the applications where the citation appears in the search report This citation was seen by the EP, JP and US examiners A box encircles language equivalents. The DE publication is a German translations of the JP publication. US citations in CCD Citations Database: Top 10 Main offices of origin First Number of Number of Number of cited Country publication citing cited non-patents date publications patents UNITED STATES OF 04-02-1947 11 425 603 167 530 941 27 200 065 AMERICA JAPAN 09-11-1965 5 071 602 19 816 033 453 775 WIPO 19-10-1978 3 294 659 16 312 310 4 346 752 CHINA 02-06-2010 2 924 018 14 126 563 1 705 684 EUROPEAN PATENT OFFICE 20-12-1978 2 592 831 10 235 245 3 335 114 GERMANY 18-09-1943 1 819 664 6 894 561 755 340 KOREA 07-01-2006 906 244 2 766 266 80 953 FRANCE 29-08-1969 666 441 2 497 330 306 360 GREAT BRITAIN 04-01-1979 573 139 2 315 470 104 202 AUSTRALIA 18-03-1971 388 841 987 570 84 435 European Patent Office 39 Overview: Access options to citations of EP applications via EPO databases Publication of search report EP-A1/3 Front page of grant publication EP-B1 Espacenet: page 'Inpadoc family' (tick citations option) Espacenet: page 'Cited documents' EP-Register: bottom of page 'About this file' EP-Register: page 'citations' CCD …[other database providers] Thank you [email protected].
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